IP Law Daily, TRADEMARK—E.D. Va.: Cancellation of General Cigar’s COHIBA trademark was proper under Pan American Convention and Cuban Assets Control Regulations, (May 9, 2025)

By Robert Margolis, J.D.

Court finds that a Cuban company owned marks in Cuba, those marks enjoyed legal protection in Cuba before General Cigar filed for its registrations in the United States, and registrant General Cigar had knowledge of the use of those marks.

In the latest chapter of a decades-long dispute between General Cigar Company and the Cuban state-owned company Empresa Cubano del Tabaco d/b/a Cubatabaco (“Cubatabaco”) over rights to the COHIBA trademark for Cuban cigars, the federal district court in Alexandria, Virginia, has dismissed General Cigar’s complaint seeking reversal of the Trademark Trial and Appeal Board’s decision cancelling General Cigar’s registrations. The court’s decision rested on interpretations of Article 8 of the Pan American Convention (“IAC”), the Cuban Assets Control Regulations (“CACR”), and Cuban trademark law (General Cigar Co. v. Empresa Cubana Del Tabaco, No. 1:23-cv-00227-LMB-WEF (E.D. Va. May 7, 2025)).

General Cigar held a United States registration for the standard-character mark COHIBA, as well as a registration for a stylized version of the mark. Cubatabaco filed a petition in the USPTO to cancel those registrations in 1997. Cubatabaco asserted that it owned a pending application for the word mark COHIBA for cigars, other tobacco products, and various smoking accessories, which it had filed under Section 44(a) of the Lanham Act on the basis of its longstanding ownership of a Cuban registration for the mark COHIBA for those goods. Cubatabaco asserted that it owned a registration in Cuba of a “mixed” trademark with a graphic design with the word “Cohiba” beneath it, which was issued in 1972 and was valid for 15 years. A subsequent registration in Cuba for the word mark COHIBA was issued in 1980. According to Cubatabaco, its pending 1997 application in the USPTO was refused registration based on a likelihood of confusion with General Cigar’s registered marks. The Board granted the cancellation petition, leading General Cigars to file its lawsuit in federal court seeking reversal of that cancellation.

IAC Article 8. Cubatabaco argued, and the Board had agreed, that the Board can cancel registrations directly under Article 8 of the Pan American Convention, pursuant to the Board’s jurisdiction under Section 17(a) of the Lanham Act. The Pan American Convention (officially titled “General Inter-American Convention for Trade Mark and Commercial Protection of Washington, 1929”) is an international agreement (to which the United States is a party) pertaining to trademarks, trade names, unfair competition, and false indications of geographical origin or source. Article 8 provides, in relevant part, that a cancellation claim may be brought by the owner of a mark that shows (1) “he enjoyed legal protection for his mark in another of the Contracting States [to the IAC] prior to the date of the application for the registration … which he seeks to cancel”; and (2) that the claimant owning the mark sought to be canceled had knowledge of the mark’s use in that Contracting State prior to filing its application for the mark sought to be canceled. The court agreed with the Board that Cubatabaco met both of those elements.

Legal protection. The court examined Cuban trademark law, resolving a duel between General Cigar’s expert and Cubatabaco’s expert and finding the latter to be more credible. First, it agreed with Cubatabaco’s expert that under Cuban law, “mixed” marks protect a word element standing alone. Thus, the court rejected General Cigar’s contention that the 1972 mixed mark registration afforded legal protection to “Cohiba” separate and apart from the design element also included in that mark. The court relied on provisions of Cuban statutory law, as well as Cuban case law and several Cuban trademark office decisions, to reach its conclusion. In contrast, General Cigar’s expert proffered no legal authority to support her assertion that a mixed mark protects the word element only if the word was “substantially more prominent in position, size, and appearance” than the graphic element. The court found no such rule in any of the decisions it analyzed.

The court also found lacking General Cigar’s assertion that even if Cubatabaco’s mixed mark protected the “Cohiba” word element, Cubatabaco’s mark lapsed because it ceased using the mark for more than three years before March 13, 1978 (the date of General Cigar’s application for registration of its word COHIBA mark). Though there was a factual dispute about Cubatabaco’s use after March 13, 1975, the court did not need to resolve that dispute because General Cigar’s argument failed on the law. Cuban statutes make clear that no lapse will be deemed to have occurred unless the Cuban Secretary of Commerce declares a lapse upon the request of a party having the right to apply for a trademark under Cuban law. Since no such declaration was made, the court found Cubatabaco’s mark did not lapse.

Knowledge. Having found that Cubatabaco met the “legal protection” element under IAC Article 8, it turned to the “knowledge” element and found evidence that General Cigar knew of Cubatabaco’s use of the mixed mark. That evidence included a Forbes magazine article describing that use, which General Cigar executives testified they “must have read.” In addition, there were handwritten notes in General Cigar’s files referring to that Forbes article.

General Cigar argued that even if it knew of “use,” Article 8 requires knowledge of “trademark use,” meaning placing trademarked goods in the commercial market. It contended it only knew that Cubatabaco was giving cigars to Cuban government officials, who then gifted them to diplomats and dignitaries, and this is not the type of commercial use that would amount to trademark use of the mark. General Cigar cited no authority to support this argument, and the court did not find it persuasive. It noted that an international treaty should be construed liberally to give effect to its underlying purpose, and the IAC’s purpose was to provide broad protection for trademarks.

CACR. Having determined that the Board validly cancelled General Cigar’s marks under IAC Article 8, the court still had to determine whether the CACR prohibits the cancellation. Those regulations, found at 31 C.F.R. §§ 515.101-515.901 (2022), prohibit transactions involving property in which Cuba or any Cuban national has, or ever had, an interest, including trademarks. But relevant to this case is an exception in the CACR for general or specific licenses that allow Cuban entities to engage in certain otherwise prohibited transactions, and this includes a general license permitting Cuban entities to engage in transactions “related to the registration and renewal” of trademarks before the USPTO. § 515.527(a)(1). A prior Federal Circuit decision in this long-running dispute held that this general license permitted Cubatabaco to apply to register its Cohiba mark and seek cancellation of General Cigar’s marks. That decision was law of the case, the district court held. Therefore, it held the CACR does not prohibit the Board’s cancellation.

The Case is No. 1:23-cv-00227-LMB-WEF.

Judge: Brinkema, L.

Attorneys: Benjamin Sorrells Boyd (DLA Piper US LLP) for General Cigar Co., Inc. Benjamin Lucas Hatch (McGuireWoods LLP) for Empresa Cubana del Tabaco.

Companies: General Cigar Company; Empresa Cubana del Tabaco d/b/a Cubatabaco

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